Tag: intellectual property

Register of Copyrights Selection and Accountability Act is First Step Towards a Modern Copyright Office

Post author By Joshua Grove
Post date March 29, 2017

U.S. Capitol building The House Judiciary Committee today overwhelmingly approved the bipartisan Register of Copyrights Selection and Accountability Act by a vote of 27-1. Introduced last Thursday by Chairman Bob Goodlatte and Ranking Member John Conyers, Jr.—with the support of Senate Judiciary Committee Chairman Chuck Grassley, Ranking Member Dianne Feinstein, and Senator Patrick Leahy—the Act is the first legislative effort to follow a four-year review of U.S. Copyright law and aims to kick-start an overdue modernization of the United States Copyright Office (USCO).

Focusing on the selection process of the Register of Copyrights, the concise bill requires the Register to be nominated by the President of the United States and subject to confirmation by the U.S. Senate, rather than appointed and dismissed at the pleasure of the Librarian of Congress. Today’s markup saw the inclusion of an amendment that would create a panel—made up of the Speaker of the House, President Pro Tem of the Senate, House and Senate Majority and Minority Leaders, and the Librarian of Congress—tasked with submitting a list of three qualified nominees to the President, who would then nominate an individual subject to confirmation by the Senate. The bill reflects the need for greater stakeholder and Congressional input in the selection of a leader Congress looks to for expert advice and analysis on the copyright system, and it represents the first step in an unquestionably necessary Copyright Office modernization effort.

In 2013, the House Judiciary Committee began a comprehensive bipartisan review of the copyright system that included 20 hearings, testimony from over 100 witnesses, and a listening tour that invited input from copyright stakeholders across the country. According to the Committee, the goal of the review was “to determine whether the copyright laws are still working in the digital age to reward creativity and innovation.” In December 2016, the first policy proposal to come out of the review focused on Copyright Office modernization and stressed the need for information technology (IT) upgrades, the creation of advisory committees and a small claims system, and overall decision making autonomy.

The Copyright Office is currently part of the Library of Congress, a legislative government agency and the main research arm of the U.S. Congress. The Office’s budget and leadership are determined by the Library, which is able to make important decisions independent of any outside review or accountability. It’s a curious arrangement, different from most other federal agencies whose leadership is subject to the checks and balances of an executive nomination and Congressional confirmation process.

As former Registers of Copyrights Ralph Oman and Marybeth Peters point out in a recent letter to Congress, the Copyright Office’s residence in the Library of Congress is a largely the result of a historical accident from the late 19th century. In 1870, Librarian of Congress Ainsworth Rand Spofford convinced Congress that copies of works submitted for copyright registration should be deposited to the Library to help build its collection, and thus the Copyright Office came under the authority of the Library. But nearly 150 years later, the Library of Congress—due to its own unique mission and approach to copyright law—is not best positioned to oversee the operation of an agency in need of reform.

There’s no dispute that the Copyright Office is in need of a facelift. For years, the Office has been underfunded, understaffed, and undervalued, making growth and development with the digital age all but impossible. Before her unexpected ouster, Register Maria Pallante provided Congress with a Register’s Perspective on Copyright Review that included a detailed list of deficiencies within the Office in need of improvement. While Pallante is no longer leading the Copyright Office, her concerns were echoed by stakeholders during the review hearings and listening tour, and Congress has recognized the need to begin an extensive modernization effort.

The copyright system is vitally important to the U.S. economy. According to a 2016 report by the International Intellectual Property Alliance, core copyright industries contributed over $1.2 trillion to the U.S. GDP and employed more than 5.5 million U.S. workers. Despite unfounded claims that its role is “mundane” and leader inconsequential, the Copyright Office plays a central role in the copyright system by providing expert reports and advice to Congress on a variety of copyright-related issues. Section 701(b) of the Copyright Act charges the Register of Copyrights with a number of meaningful duties, and Congress regularly looks to the Register and the Office for input on the development of copyright law.

Making the Register a presidential appointee with the advice and consent of the Senate is necessary to ensure that all stakeholder concerns are addressed prior to confirmation and that the Register remains accountable to Congress. Since the unprecedented removal of Register Pallante in October, there is no permanent Register of Copyrights in place, and the current Librarian of Congress is taking a highly unusual internet survey-based approach to determine the qualities of the next Register. The direct line of communication to the USCO that Congress enjoyed in the past has been disrupted, and consequential decisions are being made with little accountability or regard for Congress’s important role in the process.

These troubling developments are evidence that the system needs to change, and it’s imperative the next Register be subject to the same processes used to select the leaders of equally important government agencies. Only when the value of the Copyright Office is recognized and its infrastructure and operations updated can the system begin to modernize and keep up with the creative culture it serves.

Tags copyright, intellectual property, Kevin Madigan, U.S. Copyright Office

Kodi Software Enabling Widespread Copyright Infringement

Post author By Joshua Grove
Post date March 15, 2017

hand holding remote pointing at television showing a sports game Awards season always seems to arrive with new stories about how piracy is affecting the film industry and the way we watch movies. Whether it’s a promotional screener that was stolen and uploaded to a torrent site, or the latest software that allows users to download or stream pirated content, the tales are reminders of the enduring problem of online copyright infringement.

This year, when talking to people (outside of the copyright law world) about whether they’d seen certain Oscar-nominated films, the same name kept coming up: Kodi. Specifically, users described downloading the Kodi app to an internet connected device, then adding “plug-ins” or “add-ons” that deliver an extensive library of streaming TV shows and movies, including Moonlight, La La Land, and other Best Picture nominees. Though Kodi’s controversial popularity in the UK has been well-chronicled of late, the software is now becoming the preferred way to stream pirated content in the US, and it’s particularly discouraging because while Kodi is not in itself an illegal service, it is blurring the lines of accountability and contributing to massive IP theft.

Billing its product as “open source home theater software,” Kodi is a free media player application that allows users to view streaming media, such as videos, music, podcasts, and videos from the internet on a variety of platforms. Its open source, cross-platform nature enables interaction with third-party devices designed to facilitate infringement by including add-ons that deliver pirated content. Sales of pre-programmed “Kodi boxes” have become widespread in the UK, mostly because of their incorporation of the illicit add-ons. Kodi box popularity is catching the attention of rights holders and broadcasters such as the BBC, Sky, and the Premier League, and the UK’s Intellectual Property Office (IPO) just announced an investigation into the boxes.

The group behind Kodi recently acknowledged its connection to piracy, and pledged a renewed effort to distance itself from copyright infringement by going after unauthorized uses of its “Kodi” trademark. Unfortunately, they made the same promise in 2014, and Kodi-related piracy has grown exponentially. It’s also interesting that Kodi is threatening to enforce its own IP rights in an attempt to get people to stop “dragging our name through the muck,” while they simultaneously disregard the rights of the countless creators and copyright owners whose works their software helps pirate. In the same announcement warning of the plan to curb unauthorized use of its trademark, Kodi Product Manager Nathan Betzen displays a lack of concern for other victims of infringement.

“Team Kodi maintains an officially neutral stance on what users do with their own software. Kodi is open source software, and as long as the GPL [General Public License] is followed, you are welcome to do with it as you like.”

In the United Kingdom, a concerted effort was just announced to go after the source and target the servers feeding the illicit streams to the Kodi add-ons. Initially obtained by the English Premier League—the top-tier football (or soccer) organization in the UK—a High Court injunction will allow the League to compel the largest ISPs in the country to block the actual source of pirated streams, rather than engage in website whack-a-mole. The strategy involves going “up the content tree” to attack the servers where the streams originate, and for the moment, it seems that the ISPs are willing to cooperate.

In the US, in lieu of acquiring pre-programmed Kodi boxes, users are downloading the Kodi software directly to laptop computers, Amazon Fire Sticks, or smart TVs, and adding the illicit add-ons themselves. It makes going after Kodi for infringement difficult because its product is essentially a media player and is not actually distributing or making copies of the movies and TV shows it streams. Like the VCR thirty years before it, Kodi is capable of non-infringing uses and is likely to claim that it has no control over the bad actors using their product to infringe.

But liability for copyright infringement can extend to those who facilitate theft under the theory of secondary liability, which includes both vicarious and contributory liability. Just last year, in BMG v. Cox, a federal judge upheld a $25 million penalty against ISP giant Cox Communications for contributory and willful copyright infringement. Despite arguing that its Internet service is just like the VCR in Sony v. Universal, and therefore should not be liable for infringing acts of its customers, Cox was found to have made a material contribution to the infringement simply by providing the means—also referred to as the “site and facilities”—for a user to infringe, and to have had knowledge of repeated instances of infringement. This combination of material contribution and knowledge satisfies the test for contributory infringement, and the District Court’s finding represents a clear assignment of accountability to those that turn a blind eye to piracy.

While Cox’s failure to act in the face of blatant, repeated infringement may represent a more egregious example of contributory infringement, one could argue that Kodi is similarly exposing itself to secondary liability. By providing software that facilitates extensive piracy, Kodi surely makes a material contribution to infringement, and the Kodi group is well aware that its product “has grown to become one of the most-used pieces of software through which people can stream, download and otherwise obtain copyright infringing content.”

Though Kodi is different than Cox’s Internet service in that once the software is downloaded, its decentralized architecture means Kodi has no ability to monitor or control what it’s used for, the Supreme Court has made clear in MGM v. Grokster that the decentralized nature of software is not enough to escape contributory liability. If Kodi’s primary use can be shown to be streaming infringing content, it could face the same fate as some other illicit streaming services such as Popcorn Time. Those behind Kodi know that contributory liability for open-source software is somewhat of a gray area of copyright law that allows their product to exist, but as the Kodi name becomes more and more synonymous with piracy, it may become harder to avoid accountability.

Tags copyright, copyright infringement, intellectual property, Kevin Madigan, Supreme Court

Trusted Notifier Program Defended Against Misleading Rhetoric

Post author By Joshua Grove
Post date March 2, 2017

One year ago, domain name registry Donuts, Inc. and the Motion Picture Association of America (MPAA) entered into an agreement termed the Trusted Notifier Program in a joint effort to combat piracy. The voluntary initiative “introduced a new way to work towards mitigation of clear and pervasive cases of copyright infringement,” and according to Donuts’ one-year summary, has been a success for “rights owners, registrants and the public at large.”

While the program and similar voluntary agreements are not without their detractors, it’s important to separate good-faith criticism from misleading rhetoric. In an article posted this week, tech pioneer and Internet security expert Paul Vixie responds to a recent paper criticizing the Internet Corporation for Assigned Names and Numbers (ICANN), trade associations, and standards organizations for implementing a “privately ordered online content regulation.”

The rebuttal deconstructs University of Idaho Law Professor Annmarie Bridy’s paper piece by piece, exposing many of the claims as unsubstantiated or misleading. Among other things, Mr. Vixie’s article provides the following evaluations:

No evidence is offered in support of the claim that the sole or primary purpose of voluntary efforts such as the Trusted Notifier Program has been to develop a “large-scale program of privately ordered online content regulation.”
Claims that “less sophisticated and economically powerful” ICANN stakeholders take a backseat to rights-holder organization influence have been demonstrated to be false by the existence of new generic top-level domain (gTLD) programs.
No evidence is offered in support of the claim that copyright owners “appear to be laying the groundwork for a broad program of DNS-based enforcement, with the long-term goal of implementing a UDRP-like procedure for claims of piracy and counterfeiting that are wholly unrelated to any bad-faith or confusing use of domain names.”
The unregulated nature of the Internet has acted as a “stay out of jail free” card for millions of criminals, and some redress and balance is both inevitable and necessary.

In conclusion, Vixie notes that the Trusted Notifier Program represents the engagement of Internet industry stakeholders with rights-holder communities to create efficient takedown-related activities, which is exactly what the Internet technical community told rights holders they should pursue instead of SOPA. The article advises that “asking interested parties not to cooperate on matters of their aligned interest will never be effective. Notice and takedown, at scale, without borders, requires mutual cooperation. And that’s what the Trusted Notifier Program is meant to effect.”

March 27, 2017, update: Bridy’s response to Vixie’s post can be read here.

Tags copyright, copyright infringement, intellectual property, Kevin Madigan, notice and takedown

CPIP’s Sandra Aistars & Scalia Law Alumnae Urge Federal Circuit to Protect Creators and Rein In Fair Use in Oracle v. Google

Post author By Joshua Grove
Post date February 28, 2017

On February 17, 2017, CPIP Senior Scholar Sandra Aistars filed an amicus brief in Oracle v. Google, a copyright case currently before the Federal Circuit. Prof. Aistars worked in conjunction with Scalia Law alumnae Antigone Peyton and Jennifer Aktins of Cloudigy Law and third-year law student Rebecca Cusey to file the brief on behalf of 13 intellectual property scholars, including CPIP’s Matthew Barblan, Devlin Hartline, Sean O’Connor, Eric Priest, and Mark Schultz.

The amici urge the Federal Circuit to find that Google’s for-profit, verbatim copying of thousands of lines of Oracle’s copyrighted code was not fair use. They note that an overly broad application of the fair use defense “threatens the fundamental protections of copyright law,” and they argue that “the application of fair use in this case must be faithful to the underlying purposes of both copyright law and the fair use defense.” The amici point out that there would be “significant negative ramifications for all authors” if the Federal Circuit were to excuse Google’s copying of Oracle’s creative work for the purpose “of creating a competing commercial product.”

The amici conclude: “Expanding the fair use defense to excuse appropriation of software code for commercial gain will harm both creators and the public, as creators will have less incentive to develop new software. The public will not be well-served by policy that slows down the creative advancement of software. Nor will the public be well-served by an application of fair use that will gut copyright protection for other creative works by excusing a purely commercial copying of a creative work that harms the market for the original or its derivatives.”

To read the amicus brief, please click here.

Tags copyright, fair use, Federal Circuit, Google, intellectual property

What Would Judge Gorsuch Mean for Fair Use?

Post author By Joshua Grove
Post date February 23, 2017

U.S. Supreme Court building On February 1^st, President Trump nominated Neil Gorsuch to fill the Supreme Court seat left vacant by the passing of Justice Antonin Scalia. The announcement opened the floodgates of prognostication as to how the appellate court judge from Colorado might sway the Court in the coming terms, with forecasters pouring over his past decisions in an attempt to get into the head of the potentially game-changing jurist. And while Gorsuch’s views on intellectual property remain largely unknown, a closer look at his track record provides some insight into his understanding of copyright law that should leave creators and copyright owners optimistic.

In the forty years since the Copyright Act was enacted, courts have expanded the “transformative” fair use doctrine to encompass a variety of uses whose original expressive contribution is difficult, if not impossible, to separate from the underlying work. In particular, courts have applied fair use to cases where the purported fair user merely transforms the purpose of an underlying work, without transforming the underlying work itself and without contributing any original artistic expression. This is a discouraging trend that disregards copyright’s promotion of creativity by encouraging the addition of new expression to old. Fortunately, this trend could be offset by lawmakers and judges with an understanding of the originality requirements of copyright law.

As a federal judge for the U.S. Court of Appeals for the Tenth Circuit, Gorsuch oversaw 14 cases concerning various forms of IP, four of which involved copyright claims. Despite finding for the accused infringer in all four copyright cases, one of those decisions stands out and reveals an appreciation for the originality and new expression required of copyright–a requirement often ignored by proponents of ever-expanding notions of fair and transformative use.

In the 2008 case Meshwerks v. Toyota, the plaintiff brought a copyright infringement claim against Toyota for the unauthorized use of digital automotive models in a television commercial. The works in question were computerized two-dimensional models created by Meshwerks and based on existing Toyota vehicle designs. Though the parties had originally contracted for the designs to be used on Toyota’s website, Toyota began running TV ads featuring the designs, and Meshwerks brought an infringement claim based on the unauthorized use.

The District Court in Utah granted summary judgment in favor of Toyota, finding that Meshwerks’ designs were not sufficiently original to qualify for copyright protection. Meshwerks then appealed to the U.S. Court of Appeals for the Tenth Circuit in Colorado, where Gorsuch had served since his confirmation in 2006.

Approaching the question of originality central to the case, Gorsuch agreed with the district court that the Meshwerks models contributed no new expression to Toyota’s preexisting designs and therefore were not eligible for copyright protection. In the opinion, Gorsuch refers to the “sine qua non of copyright” that requires at least a degree of originality in protectable works of authorship so that copyright will “reward[ ] (and thus encourag[e]) those who contribute something new to society.” The decision goes on to address Meshwerks’ depiction of Toyota’s three-dimensional physical objects in a two-dimensional digital medium, asserting that the “putative creator who merely shifts the medium in which another’s creation is expressed has not necessarily added anything beyond the expression contained in the original.”

Though Meshwerks didn’t involve fair use claims, Gorsuch’s focus on the lack of original expression in simply shifting mediums reflects the Supreme Court’s articulation of transformative fair use in Campbell v. Acuff Rose, a case that he experienced first hand as a law clerk for Justice Anthony Kennedy. Campbell involved the unauthorized parody of a popular Roy Orbison song, and in its fair use deliberation the Court focused intently on “whether the new work merely supersedes the objects of the original creation . . . or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’” (emphasis added). The Court found that if the new work sufficiently transforms the original through the additional of new expression, it may qualify as fair use.

But the idea of what qualifies as “transformative” has come to include works of transformative purpose, which often are little more than extensive, for-profit acts of wholesale copying of entire works that merely offer the underlying works in a new context. The transformative purpose theory has been applied to the mass scanning and digitization of copyrighted materials for projects such as Google Books, where the creation of a searchable database is considered transformative, despite the fact that the underlying works were not transformed in any original or expressive way. This change in context is effectively the same as the shifts in medium denounced in Meshwerks, and Gorsuch’s ideas about the need for new and original expression not only echo the Supreme Court’s interpretation in Campbell, but also reflect an understanding of the core principle of originality in copyright law.

As the digital age enables copying at the click of a mouse, it’s important to recognize the limits of fair use and realize that while an argument could be made that some of these recent acts of copying are transformative, others are dangerously close to the mere shifts in medium Gorsuch warned against in Meshwerks. Some instances of format-shifting that have been found to be fair use—such as converting full-size images to thumbnails in a search engine—provide an example of unauthorized uses that could benefit from a Gorsuch-style analysis of originality. While few would argue that the owner of a legitimate copy of an album or movie shouldn’t be able to transfer the work to different devices, allowing for a broad fair use application to format-shifting creates a slippery slope for shifts in medium that add no original expression.

Fortunately, despite pressure from groups who would like to see an expansion of fair use that would effectively annihilate copyright law, the Copyright Office recently refused to adopt an exemption that would have allowed broad, noncommercial format-shifting of motion pictures distributed on DVDs, Blu-ray discs, and downloaded files. The Office’s final rule found that proponents of the exemption “failed to establish a legal or factual record sufficient to establish that the space- or formatshifting of audiovisual works, e-books, and other copyrighted works constitutes a noninfringing use,” and that “fair use, as it stands today, does not sanction broad-based space-shifting or formatshifting.” Notwithstanding its refusal to grant the exemption, the Copyright Office recommended that format-shifting policy judgments be left to Congress, further highlighting the need for leaders who understand the goals of copyright law.

As different–and often misguided–theories of what constitutes fair use flood the internet during Fair Use Week, it’s important to acknowledge the doctrine’s purpose as a tool to promote the combination of original expressive works and honor the goals of copyright law. As Gorsuch says in Meshwerks, copyright law intends to encourage those who contribute something new to society, “while also allowing (and thus stimulating) others to build upon, add to, and develop those creations.” Gorsuch’s words invoke the same principles endorsed in Campbell, which says, “[f]rom the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . . .”

As copyright experts have pointed out (see here, here, and here), many of those celebrating fair use this week misunderstand the doctrine and want the public to believe that copyright law and fair use are at odds. It’s a false dichotomy that betrays the purpose of copyright law and risks devaluing the original works whose expressions truly enrich society. It’s a risk that could threaten both the quality of future works and the creative ecosystem they facilitate, but it’s a risk that can be offset by leaders, advocates, and judges with an appreciation for the true intent of copyright law and the fair use doctrine.

Tags copyright infringement, Google, intellectual property, Kevin Madigan, Supreme Court, U.S. Copyright Office

President Supreme Court

Intellectual Property Backgrounds of President Trump’s Potential Supreme Court Nominees

Post author By Joshua Grove
Post date January 23, 2017
No Comments on Intellectual Property Backgrounds of President Trump’s Potential Supreme Court Nominees

By Andrew Baluch [1] & Devlin Hartline

President Donald Trump will soon announce his nominee to fill the vacancy left at the Supreme Court by late Associate Justice Antonin Scalia. On September 23, 2016, the Trump campaign revealed that there are twenty-one candidates under consideration for the nomination.

Below is a summary of the intellectual property backgrounds of President Trump’s twenty-one potential Supreme Court nominees. The summary addresses judicial, legislative, and legal experience, as well as education and scholarly work. The summary includes data on each nominee’s intellectual property cases, whether decided as a judge or argued in private practice. Where appropriate, the summary also notes legislative bills that were co-sponsored by the nominee.

Click on the nominee’s name in the table below to jump down to their detailed summary.

SUMMARY OF INTELLECTUAL PROPERTY CASES
		Cases Decided as Judge				Cases Argued in Private Practice
No.	Nominee	Patent	Trademark	Copyright	Trade Secret	Patent	Trademark	Copyright	Trade Secret
1	Blackwell, Keith	0	1	0	0	0	0	0	0
2	Canady, Charles	1	2	0	0	0	0	0	0
3	Colloton, Steven	2	9	1	0	0	0	0	0
4	Eid, Allison	0	0	0	1	0	0	0	0
5	Gorsuch, Neil	0	7	4	3	0	0	0	0
6	Gruender, Raymond	0	5	7	2	0	0	1	0
7	Hardiman, Thomas	1	6	5	3	0	0	0	0
8	Kethledge, Raymond	0	4	2	1	5	0	0	0
9	Larsen, Joan	0	0	0	0	0	0	0	0
10	Lee, Mike	N/A	N/A	N/A	N/A	1	0	0	0
11	Lee, Thomas	0	0	0	3	0	27	2	1
12	Mansfield, Edward	0	0	0	0	1	1	1	1
13	Moreno, Federico	3	15	9	3	0	0	0	0
14	Pryor, William	0	3	3	0	0	0	0	0
15	Ryan, Margaret	0	0	0	0	0	0	0	0
16	Stras, David	0	0	0	1	0	0	0	0
17	Sykes, Diane	4	5	8	2	0	0	0	0
18	Thapar, Amul	0	1	1	1	0	0	0	0
19	Tymkovich, Timothy	1	5	6	2	0	0	0	0
20	Willett, Don	1	0	0	0	0	0	0	0
21	Young, Robert	0	1	0	0	0	0	0	0

1. Keith R. Blackwell

Supreme Court of Georgia (2012 – present)

Prior Judicial Experience

Court of Appeals of Georgia (2010 – 2012)

Prior Legal Experience

Parker, Hudson, Rainer & Dobbs LLP; Assistant District Attorney, Cobb County, GA; Alston & Bird LLP; Law Clerk to Judge J.L. Edmondson (11th Circuit)

Education

JD, University of Georgia School of Law (1999); BA, University of Georgia (1996)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	1 total (in favor of owner)
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Kremer v. Tea Party Patriots, Inc., 314 Ga. App. 459 (2012)

2. Charles T. Canady

Florida Supreme Court (2008 – present)

Prior Judicial Experience

Florida Second District Court of Appeal (2002 – 2008)

Prior Legislative Experience

U.S. Representative (R-FL) (1993 – 2001) (House Judiciary Committee); Florida House of Representatives (1984 – 1990)

Prior Legal Experience

General Counsel to Florida Governor Jeb Bush; Lane, Trohn, Clarke, Bertrand & Williams, PA; Holland & Knight

Intellectual Property Bills Co-Sponsored as U.S. Representative

Co-sponsored 13 bills involving intellectual property, including: 104th-H.R.1733, Patent Application Publication Act of 1995 (introduced); 104th-H.R.1127, Medical Procedures Innovation and Affordability Act (introduced); 104th-H.R.587, Biotechnological Process Patents (passed House); 104th-H.R.359, Patent Term Restoration (introduced)

Education

JD, Yale Law School (1979); BA, Haverford College (1976)

Intellectual Property Cases Decided as a Judge

Patent	1 total (in favor of malpractice defendant law firm and against client patentee)
Trademark	2 total (all in favor of owner)
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Larson & Larson, P.A. v. TSE Indus., Inc., 22 So. 3d 36 (Fla. 2009); Florida Virtual Sch. v. K12, Inc., 148 So. 3d 97 (Fla. 2014); Rooney v. Skeet’r Beat’r Of Sw. Florida, Inc., 898 So. 2d 968 (Fla. Dist. Ct. App. 2005)

3. Steven M. Colloton

U.S. Court of Appeals for the Eighth Circuit (2003 – present)

Prior Judicial Experience

None

Prior Legal Experience

U.S. Attorney, Southern District of Iowa; Adjunct Lecturer, University of Iowa College of Law; Private Practice, Iowa; Associate Independent Counsel, Office of Independent Counsel Kenneth W. Starr; Assistant U.S. Attorney, Northern District of Iowa; Special Assistant to the Assistant Attorney General, Office of Legal Counsel; Law Clerk to Chief Justice William H. Rehnquist (U.S. Supreme Court); Law Clerk to Judge Laurence H. Silberman (D.C. Circuit)

Education

JD, Yale Law School (1988); BA, Princeton University (1985)

Intellectual Property Cases Decided as a Judge

Patent	2 total (all in favor of infringer)
Trademark	9 total (7 in favor of owner; 2 in favor of infringer)
Copyright	1 total (in favor of owner)
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Andover Healthcare, Inc. v. 3M Co., 817 F.3d 621 (8th Cir. 2016); Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005); B & B Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020 (8th Cir. 2013); C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007); Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004); Faegre & Benson, LLP v. Purdy, 129 F. App’x 323 (8th Cir. 2005); Gateway, Inc. v. Companion Prod., Inc., 384 F.3d 503 (8th Cir. 2004); Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc., 466 F.3d 630 (8th Cir. 2006); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010); Lovely Skin, Inc. v. Ishtar Skin Care Prod., LLC, 745 F.3d 877 (8th Cir. 2014); Pangaea, Inc. v. Flying Burrito LLC, 647 F.3d 741 (8th Cir. 2011); Capitol Records, Inc. v. Thomas-Rasset, 692 F.3d 899 (8th Cir. 2012)

4. Allison H. Eid

Colorado Supreme Court (2006 – present)

Prior Judicial Experience

None

Prior Legal Experience

Solicitor General, State of Colorado; Associate Professor, University of Colorado School of Law; Arnold & Porter; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge Jerry E. Smith (5th Circuit)

Education

JD, University of Chicago Law School (1991); BA, Stanford University (1987)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	1 total (dissenting in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0 (but in 1 case analogizing to patent law for “full compensation” damages)
Trademark	0
Copyright	0
Trade Secret	0

Case: Acoustic Mktg. Research, Inc. v. Technics, LLC, 198 P.3d 96 (Colo. 2008)

5. Neil M. Gorsuch

U.S. Court of Appeals for the Tenth Circuit (2006 – present)

Prior Judicial Experience

None

Prior Legal Experience

Principal Deputy to U.S. Associate Attorney General; Kellogg, Huber, Hansen, Todd & Evans; Law Clerk to Justice Byron R. White and Justice Anthony M. Kennedy (U.S. Supreme Court); Law Clerk to Judge David B. Sentelle (D.C. Circuit)

Education

DPhil, Oxford University (2004); JD, Harvard Law School (1991); BA, Columbia University (1988)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	7 total (2 in favor of owner; 5 in favor of infringer)
Copyright	4 total (all in favor of infringer)
Trade Secret	3 total (2 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Earthgrains Baking Companies Inc. v. Sycamore Family Bakery, Inc., 573 F. App’x 676 (10th Cir. 2014); Gen. Steel Domestic Sales, LLC v. Chumley, 627 F. App’x 682 (10th Cir. 2015); Lorillard Tobacco Co. v. Engida, 611 F.3d 1209 (10th Cir. 2010); Hargrave v. Chief Asian, LLC, 479 F. App’x 827 (10th Cir. 2012); Surefoot LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008); Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008); Blehm v. Jacobs, 702 F.3d 1193 (10th Cir. 2012); Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063 (10th Cir. 2008); La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171 (10th Cir. 2009); Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258 (10th Cir. 2008); Russo v. Ballard Med. Prod., 550 F.3d 1004 (10th Cir. 2008); Storagecraft Tech. Corp. v. Kirby, 744 F.3d 1183 (10th Cir. 2014)

6. Raymond W. Gruender

U.S. Court of Appeals for the Eighth Circuit (2004 – present)

Prior Judicial Experience

None

Prior Legal Experience

U.S. Attorney, Eastern District of Missouri; Thompson Coburn LLP; Assistant U.S. Attorney, Eastern District of Missouri; Lewis Rice & Fingersh

Education

JD, Washington University (1987); MBA, Washington University (1987), BA, Washington University (1984)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	5 total (5 in favor of owner
Copyright	7 total (4 in favor of owner; 3 in favor of infringer)
Trade Secret	2 total (1 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	1 total (amicus brief on behalf of U.S. Copyright Office)
Trade Secret	0

Cases: Dryer v. Nat’l Football League, 814 F.3d 938 (8th Cir. 2016); First Nat. Bank in Sioux Falls v. First Nat. Bank S. Dakota, 679 F.3d 763 (8th Cir. 2012); Jones v. W. Plains Bank & Trust Co., 813 F.3d 700 (8th Cir. 2015); Kforce, Inc. v. Surrex Sols. Corp., 436 F.3d 981 (8th Cir. 2006); Lovely Skin, Inc. v. Ishtar Skin Care Prod., LLC, 745 F.3d 877 (8th Cir. 2014); Pearson Educ., Inc. v. Almgren, 685 F.3d 691 (8th Cir. 2012); Pinnacle Pizza Co. v. Little Caesar Enterprises, Inc., 598 F.3d 970 (8th Cir. 2010); Strange Music, Inc. v. Anderson, 419 F. App’x 707 (8th Cir. 2011); United States v. Frison, 825 F.3d 437 (8th Cir.); United States v. Sweeney, 611 F.3d 459 (8th Cir. 2010); Warner Bros. Entm’t v. X One X Prods., 644 F.3d 584 (8th Cir. 2011); Warner Bros. Entm’t v. X One X Prods., 840 F.3d 971 (8th Cir. 2016); Wells Fargo Bank, N.A. v. WMR e-PIN, LLC, 653 F.3d 702 (8th Cir. 2011)

7. Thomas M. Hardiman

U.S. Court of Appeals for the Third Circuit (2007 – present)

Prior Judicial Experience

U.S. District Court for the Western District of Pennsylvania (2003 – 2007)

Prior Legal Experience

Skadden, Arps, Slate, Meagher & Flom; Titus & McConomy LLP; Reed Smith LLP

Education

JD, Georgetown University Law Center (1990); BA, University of Notre Dame (1987)

Intellectual Property Cases Decided as a Judge

Patent	1 total (in favor of negligent law firm)
Trademark	6 total (5 in favor of owner; 1 in favor of infringer)
Copyright	5 total (3 in favor of owner; 2 in favor of infringer)
Trade Secret	3 total (1 in favor of owner; 2 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Ackourey v. Sonellas Custom Tailors, 573 F. App’x 208 (3d Cir. 2014); Am. Bd. of Internal Med. v. Von Muller, 540 F. App’x 103 (3d Cir. 2013); Avaya Inc., RP v. Telecom Labs, Inc., 838 F.3d 354 (3d Cir. 2016); Boyle v. United States, 391 F. App’x 212 (3d Cir. 2010); Brand Mktg. Grp. LLC v. Intertek Testing Servs., N.A., Inc., 801 F.3d 347 (3d Cir. 2015); Dow Chem. Canada, Inc. v. HRD Corp., 587 F. App’x 741 (3d Cir. 2014); FedEx Ground Package Sys. v. Applications Int’l Corp., 2005 U.S. Dist. LEXIS 26651 (W.D. Pa. Nov. 4, 2005); Fishkin v. Susquehanna Partners, G.P., 340 F. App’x 110 (3d Cir. 2009); Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192 (3d Cir. 2014); Aslam v. Attorney Gen. of U.S., 404 F. App’x 599 (3d Cir. 2010); Sims v. Viacom, Inc., 544 F. App’x 99 (3d Cir. 2013); Singer Mgmt. Consultants, Inc. v. Milgram, 650 F.3d 223 (3d Cir. 2011); United States v. Diallo, 476 F. Supp. 2d 497 (W.D. Pa. 2007), aff’d, 575 F.3d 252 (3d Cir. 2009); William A. Graham Co. v. Haughey, 568 F.3d 425 (3d Cir. 2009); World Entm’t Inc. v. Brown, 487 F. App’x 758 (3d Cir. 2012)

8. Raymond M. Kethledge

U.S. Court of Appeals for the Sixth Circuit (2008 – present)

Prior Judicial Experience

None

Prior Legal Experience

Bush Seyferth & Paige PLLC; Feeney Kellett Wienner & Bush PC; Counsel, Ford Motor Company; Honigman, Miller, Schwartz & Cohn LLP; Law Clerk to Justice Anthony Kennedy (U.S. Supreme Court); Judiciary Counsel to U.S. Senator Spencer Abraham (R-MI); Law Clerk to Judge Ralph B. Guy, Jr. (6th Circuit)

Education

JD, University of Michigan Law School (1993); BA, University of Michigan (1989)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	4 total (3 in favor of owner; 1 in favor of infringer)
Copyright	2 total (1 in favor of owner; 1 in favor of infringer)
Trade Secret	1 total (in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	5 total (all on behalf of infringer/generic pharmaceutical company)
Trademark	0
Copyright	0
Trade Secret:	0

Cases: Kerr Corp. v. Freeman Mfg. & Supply Co., 2009 U.S. App. LEXIS 6342 (6th Cir. Ohio 2009); Sony/ATV Publ’g, LLC v. Marcos, 651 F. App’x 482 (6th Cir. 2016); L.F.P.IP, LLC v. Hustler Cincinnati, Inc., 533 F. App’x 615 (6th Cir. 2013); Nagler v. Garcia, 370 F. App’x 678 (6th Cir. 2010); R.C. Olmstead, Inc., v. CU Interface, LLC, 606 F.3d 262 (6th Cir. 2010); Taylor v. Thomas, 624 F. App’x 322 (6th Cir. 2015); In re Desloratadine Patent Litig., 502 F. Supp. 2d 1354 (U.S. Jud. Pan. Mult. Lit. 2007); PDL BioPharma, Inc. v. Sun Pharm. Indus., 2007 U.S. Dist. LEXIS 56948 (E.D. Mich. Aug. 6, 2007); Schering Corp. v. Caraco Pharm. Labs., Ltd., 2007 U.S. Dist. LEXIS 41020 (E.D. Mich. June 6, 2007); Sun Pharm. Indus. v. Eli Lilly & Co., 2008 U.S. Dist. LEXIS 35206 (E.D. Mich. Apr. 30, 2008); Sun Pharm. Indus. v. Eli Lilly & Co., 2008 U.S. Dist. LEXIS 46730 (E.D. Mich. June 16, 2008)

9. Joan L. Larsen

Michigan Supreme Court (2015 – present)

Prior Judicial Experience

None

Prior Legal Experience

Adjunct Professor, University of Michigan Law School; Deputy Assistant Attorney General, Office of Legal Counsel; Visiting Assistant Professor, Northwestern University Pritzker School of Law; Sidley Austin LLP; Law Clerk to Justice Antonin Scalia (U.S. Supreme Court); Law Clerk to Judge David B. Sentelle (D.C. Circuit)

Education

JD, Northwestern University Pritzker School of Law (1993); BA, University of Northern Iowa (1990)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

10. Michael S. Lee

U.S. Senator (R-UT) (2011 – present)

Prior Legislative Experience

None

Prior Legal Experience

Howrey LLP; Law Clerk to Justice Samuel A. Alito, Jr. (U.S. Supreme Court); General Counsel to Utah Governor Jon Huntsman; Assistant U.S. Attorney, District of Utah; Sidley Austin LLP; Law Clerk to Judge Samuel A. Alito, Jr. (3rd Circuit); Law Clerk to Judge Dee Benson (D. Utah)

Intellectual Property Bills Co-Sponsored as U.S. Senator

Co-sponsored 6 bills involving intellectual property: 114th-S.2733, VENUE Act (introduced); 114th-S.1137, PATENT Act (introduced and voted yes); 113th-S.1720, Patent Transparency and Improvements Act of 2013 (introduced); 114th-S.328, A bill to amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms, or other insignia of the United States, or any State or local government (introduced); 113th-S.1816, A bill to amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms, or other insignia of the United States, or any State or local government (introduced); 113th-S.517, Unlocking Consumer Choice and Wireless Competition Act (became law)

Education

JD, Brigham Young University Law School (1997); BS, Brigham Young University (1994)

Intellectual Property Cases Decided as a Judge

Patent	N/A
Trademark	N/A
Copyright	N/A
Trade Secret	N/A

Intellectual Property Cases Argued in Private Practice

Patent	1 total (on behalf of infringer Deutsche Bank)
Trademark	0
Copyright	0
Trade Secret	0

Case: Island Intellectual Prop. LLC v. Deutsche Bank Trust Co. Americas, 2012 U.S. Dist. Ct. Briefs LEXIS 15212 (S.D.N.Y. Feb. 10, 2012)

11. Thomas R. Lee

Utah Supreme Court (2010 – present)

Prior Judicial Experience

None

Prior Legal Experience

Deputy Assistant Attorney General, Civil Division; Rex & Maureen Rawlinson Professor of Law, J. Reuben Clark Law School, Brigham Young University; Howard, Phillips & Anderson LLC; Parr Brown Gee & Loveless, PC; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge J. Harvie Wilkinson, III (4th Circuit)

Scholarly Articles on Intellectual Property

Thomas R. Lee, et. al., An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L.J. 1033 (2009); Thomas R. Lee, et. al., Sophistication, Bridging the Gap, and the Likelihood of Confusion: An Empirical and Theoretical Analysis, 98 Trademark Rep. 913 (2008); Thomas R. Lee, et. al., Trademarks, Consumer Psychology, and the Sophisticated Consumer, 57 Emory L.J. 575 (2008); Thomas R. Lee, Demystifying Dilution, 84 B.U. L. Rev. 859 (2004); Thomas R. Lee, Eldred v. Ashcroft and the (Hypothetical) Copyright Term Extension Act of 2020, 12 Tex. Intell. Prop. L.J. 1 (2003); Thomas R. Lee, et. al. “To Promote the Progress of Science”: The Copyright Clause and Congress’s Power to Extend Copyrights, 16 Harv. J.L. & Tech. 1 (2002); Thomas R. Lee, In Rem Jurisdiction in Cyberspace, 75 Wash. L. Rev. 97 (2000) (proposing an “in rem” solution to the problem of cyberpiracy)

Education

JD, University of Chicago Law School (1991); BA, Brigham Young University (1988)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	3 total (all in favor of owner)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	27 total (all on behalf of owner)
Copyright	2 total (1 on behalf of owner; 1 on behalf of infringer)
Trade Secret	1 total (on behalf of infringer)

Cases: InnoSys, Inc. v. Mercer, 364 P.3d 1013 (Utah 2015); Legacy Res., Inc. v. Liberty Pioneer Energy Source, Inc., 322 P.3d 683 (Utah 2013); USA Power, LLC v. PacifiCorp, 372 P.3d 629 (Utah 2016)

12. Edward M. Mansfield

Iowa Supreme Court (2011 – present)

Prior Judicial Experience

Iowa Court of Appeals (2009 – 2011)

Prior Legal Experience

Belin Lamson McCormick Zumbach & Flynn, PC; Lewis Roca Rothgerber Christie LLP; Adjunct Professor, Drake University Law School; Law Clerk to Judge Patrick Higginbotham (5th Circuit)

Education

JD, Yale Law School (1982); BA, Harvard University (1978)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	1 total (on behalf of owner)
Trademark	1 total (on behalf of infringer)
Copyright	1 total (on behalf of infringer)
Trade Secret	1 total (on behalf of owner)

Cases: Kemin Foods, L.C. v. Pigmentos Vegetales del Centro S.A. de C.V., 384 F. Supp. 2d 1334 (S.D. Iowa 2005), aff’d, 464 F.3d 1339 (Fed. Cir. 2006); Amerus Group Co. v. Ameris Bancorp, 2006 U.S. Dist. LEXIS 32722 (S.D. Iowa May 22, 2006); Ryan v. Editions Ltd. West, Inc., 2016 U.S. Dist. LEXIS 131652 (N.D. Cal. Sept. 23, 2016); Midwest Oilseeds, Inc. v. Limagrain Genetics Corp., 2002 U.S. Dist. LEXIS 28698 (S.D. Iowa Nov. 8, 2002)

13. Federico A. Moreno

U.S. District Court for the Southern District of Florida (1990 – present)

Prior Judicial Experience

Eleventh Judicial Circuit of Florida (1987 – 1990); Miami-Dade County Court (1986 – 1987)

Prior Legal Experience

Thornton, Rothman & Moreno, PA; Assistant Federal Public Defender, Southern District of Florida; Rollins, Peeples & Meadows, PA

Education

JD, University of Miami School of Law (1978); BA, University of Notre Dame (1974)

Intellectual Property Cases Decided as a Judge

Patent	3 (1 in favor of owner; 2 in favor of infringer)
Trademark	15 (11 in favor of owner; 4 in favor of infringer)
Copyright	9 (7 in favor of owner; 2 in favor of infringer)
Trade Secret	3 (2 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Allegiance Healthcare Corp. v. Coleman, 232 F. Supp. 2d 1329 (S.D. Fla. 2002); Biotanic, Inc. v. Vazquez, 2010 U.S. Dist. LEXIS 69048 (S.D. Fla. July 7, 2010); Burger King Corp. v. Weaver, 33 F. Supp. 2d 1037 (S.D. Fla. 1998); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999); Coach Servs. v. 777 Lucky Accessories, Inc., 2010 U.S. Dist. LEXIS 67739 (S.D. Fla. June 16, 2010); Davis v. Raymond, 2013 U.S. Dist. LEXIS 68392 (S.D. Fla. May 13, 2013); Erika Boom & Belly & Kicks I, LLC v. Rosebandits, LLC, 2013 U.S. Dist. LEXIS 158528 (S.D. Fla. Nov. 5, 2013); CEyePartner, Inc. v. Kor Media Group LLC, 2013 U.S. Dist. LEXIS 98370 (S.D. Fla. July 15, 2013); Fuentes v. Mega Media Holdings, Inc., 721 F. Supp. 2d 1255 (S.D. Fla. 2010); HFuentes v. Mega Media Holdings, Inc., 2011 U.S. Dist. LEXIS 5298 (S.D. Fla. Jan. 20, 2011); Gapardis Health & Beauty, Inc. v. Pramil S.R.L. (ESAPHARMA), 2007 U.S. Dist. LEXIS 98005 (S.D. Fla. May 23, 2007); Gen. Cigar Holdings, Inc. v. Altadis, S.A., 205 F. Supp. 2d 1335 (S.D. Fla.); Glob. Innovation Tech. Holdings, LLC v. Acer Am. Corp., 634 F. Supp. 2d 1346 (S.D. Fla. 2009); Greenberg v. Miami Children’s Hosp. Research Inst., Inc., 264 F. Supp. 2d 1064 (S.D. Fla. 2003); MHermosilla v. Octoscope Music, LLC, 2010 U.S. Dist. LEXIS 129469 (S.D. Fla. Dec. 3, 2010); Icon Health & Fitness, Inc. v. IFITNESS, Inc., 2012 U.S. Dist. LEXIS 46824 (S.D. Fla. Apr. 2, 2012); Inmuno Vital, Inc. v. Golden Sun, Inc., 49 F. Supp. 2d 1344 (S.D. Fla. 1997); HLorentz v. Sunshine Health Prods., 2010 U.S. Dist. LEXIS 100985 (S.D. Fla. Sept. 23, 2010); Milk Money Music v. Oakland Park Entm’t Corp., 2009 U.S. Dist. LEXIS 121661 (S.D. Fla. Dec. 10, 2009); NPA Assocs., LLC v. Lakeside Portfolio Mgmt., LLC, 2014 U.S. Dist. LEXIS 22805 (S.D. Fla. Feb. 22, 2014); Platypus Wear, Inc. v. Clarke Modet & Co., 515 F. Supp. 2d 1288 (S.D. Fla. 2007); Polvent v. Global Fine Arts, Inc., 2014 U.S. Dist. LEXIS 130936 (S.D. Fla. Sept. 18, 2014); Promex, LLC v. Perez Distrib. Fresno, Inc., 2010 U.S. Dist. LEXIS 90677 (S.D. Fla. Sept. 1, 2010); Setai Hotel Acquisitions, LLC v. Luxury Rentals Miami Beach, Inc., 2016 U.S. Dist. LEXIS 171396 (S.D. Fla. Dec. 9, 2016); TNT USA, Inc v. TrafiExpress, S.A. de C.V., 434 F. Supp. 2d 1322 (S.D. Fla. 2006); SValeant Int’l (Barb.) SRL v. Watson Pharms., Inc., 2012 U.S. Dist. LEXIS 193254 (S.D. Fla. July 6, 2012); Valeant Int’l (Barbados) SRL v. Watson Pharms., Inc., 2011 U.S. Dist. LEXIS 128742 (S.D. Fla. Nov. 7, 2011); Valoro, LLC v. Valero Energy Corp., 2014 U.S. Dist. LEXIS 110554 (S.D. Fla. Aug. 11, 2014); Y.Z.Y., Inc. v. Azmere USA Inc., 2013 U.S. Dist. LEXIS 192674 (S.D. Fla. Oct. 16, 2013)

14. William H. Pryor, Jr.

U.S. Court of Appeals for the Eleventh Circuit (2004 – present)

Prior Judicial Experience

None

Prior Legal Experience

Commissioner, U.S. Sentencing Commission; Visiting Professor, University of Alabama School of Law; Attorney General, Alabama; Deputy Attorney General, Alabama; Adjunct Professor, Samford University, Cumberland School of Law; Walston, Stabler, Wells, Anderson & Bains; Cabaniss, Johnston, Gardner, Dumas & O’Neal; Law Clerk to Judge John M. Wisdom (5th Circuit)

Education

JD, Tulane University School of Law (1987); BA, Northeast Louisiana University (1984)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	3 total (all in favor of owner)
Copyright	3 total (all in favor of infringer)
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: ADT LLC v. Alarm Prot. Tech. Florida, LLC, 646 F. App’x 781 (11th Cir. 2016); Genesys Software Sys. v. Ceridian Corp., 2016 U.S. App. LEXIS 20914 (11th Cir. Nov. 22, 2016); Jysk Bed’N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015); Latele TV, C.A. v. Telemundo Communs. Group, LLC, 2016 U.S. App. LEXIS 20345 (11th Cir. Fla. May 26, 2016); Navellier v. Fla., 2016 U.S. App. LEXIS 21473 (11th Cir. Fla. Dec. 1, 2016); Singleton v. Dean, 611 F. App’x 671 (11th Cir. 2015); Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, 809 F.3d 1171 (11th Cir. 2015)

15. Margaret A. Ryan

U.S. Court of Appeals for the Armed Forces (2006 – present)

Prior Judicial Experience

None

Prior Legal Experience

Wiley Rein LLP; Bartlit Beck Palenchar & Scott LLP; Cooper Carvin & Rosenthal; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge J. Michael Luttig (4th Circuit); Judge Advocate, U.S. Marine Corps

Education

JD, Notre Dame Law School (1995); BA, Knox College (1985)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

16. David R. Stras

Minnesota Supreme Court (2010 – present)

Prior Judicial Experience

None

Prior Legal Experience

Professor, University of Minnesota Law School; Faegre & Benson LLP; Sidley Austin Brown & Wood; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge J. Michael Luttig (4th Circuit); Law Clerk to Judge Melvin Brunetti (9th Circuit)

Education

JD, University of Kansas School of Law (1999); MBA, University of Kansas (1999); BA, University of Kansas (1995)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	1 total (in favor of owner)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Seagate Tech., LLC v. W. Digital Corp., 854 N.W.2d 750 (Minn. 2014)

17. Diane S. Sykes

U.S. Court of Appeals for the Seventh Circuit (2004 – present)

Prior Judicial Experience

Wisconsin Supreme Court (1999 – 2004); Wisconsin Circuit Court, Milwaukee County (1992 – 1999)

Prior Legal Experience

Whyte Hirschboeck & Dudek SC; Law Clerk to Judge Terence T. Evans (E.D. Wis.)

Education

JD, Marquette University Law School (1984); BS, Northwestern University (1980)

Intellectual Property Cases Decided as a Judge

Patent	4 total (3 in favor of owner; 1 in favor of infringer)
Trademark	5 total (2 in favor of owner; 3 in favor of infringer)
Copyright	8 total (4 in favor of owner; 4 in favor of infringer)
Trade Secret	2 total (all in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Allan Block Corp. v. Cty. Materials Corp., 512 F.3d 912 (7th Cir. 2008); Bell v. Lantz, 825 F.3d 849 (7th Cir. 2016); Cent. Mfg., Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007); Chicago Bldg. Design, P.C. v. Mongolian House, Inc., 770 F.3d 610 (7th Cir. 2014); Coach, Inc. v. DI DA Imp. & Exp., Inc., 630 F. App’x 632 (7th Cir. 2016); Consumer Health Info. Corp. v. Amylin Pharm., Inc., 819 F.3d 992 (7th Cir.); Edgenet, Inc. v. Home Depot U.S.A., Inc., 658 F.3d 662 (7th Cir. 2011); Furkin v. Smikun, 237 F. App’x 86 (7th Cir. 2007); Georgia-Pac. Consumer Prod. LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011); Grigoleit Co. v. Whirlpool Corp., 769 F.3d 966 (7th Cir. 2014); Hecny Transp., Inc. v. Chu, 430 F.3d 402 (7th Cir. 2005); Hyson USA, Inc. v. Hyson 2U, Ltd., 821 F.3d 935 (7th Cir. 2016); Kelley v. Chicago Park Dist., 635 F.3d 290 (7th Cir. 2011); Mostly Memories, Inc. v. For Your Ease Only, Inc., 526 F.3d 1093 (7th Cir. 2008); nClosures Inc. v. Block & Co., 770 F.3d 598 (7th Cir. 2014); Schrock v. Learning Curve Int’l, Inc., 586 F.3d 513 (7th Cir. 2009); Specht v. Google Inc., 747 F.3d 929 (7th Cir. 2014); Waterloo Furniture Components, Ltd. v. Haworth, Inc., 467 F.3d 641 (7th Cir. 2006); Wisconsin Alumni Research Found. v. Xenon Pharm., Inc., 591 F.3d 876 (7th Cir. 2010)

18. Amul R. Thapar

U.S. District Court for the Eastern District of Kentucky (2008 – present)

Prior Judicial Experience

None

Prior Legal Experience

U.S. Attorney, Eastern District of Kentucky; Assistant U.S. Attorney, Southern District of Ohio; General Counsel, Equalfooting.com; Assistant U.S. Attorney, District of Columbia; Trial Advocacy Instructor, Georgetown University Law Center; Adjunct Professor, Vanderbilt University Law School; Adjunct Professor, University of Virginia School of Law; Adjunct Professor, Northern Kentucky University, Chase College of Law; Williams & Connolly; Squire Sanders & Dempsey; Adjunct Professor, University of Cincinnati College of Law; Law Clerk to Judge Nathaniel R. Jones (6th Circuit); Law Clerk to Judge S. Arthur Spiegel (S.D. Ohio)

Education

JD, University of California, Berkeley, Boalt Hall School of Law (1994); BS, Boston College (1991)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	1 total (in favor of infringer)
Copyright	1 total (in favor of owner)
Trade Secret	1 total (in favor of owner)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Duty Free Americas, Inc. v. Estee Lauder Companies, Inc., 797 F.3d 1248 (11th Cir. 2015); Fastenal Co. v. Crawford, 609 F. Supp. 2d 650 (E.D. Ky. 2009); Rich & Rich P’ship v. Poetman Records USA, Inc., 714 F. Supp. 2d 657 (E.D. Ky. 2010)

19. Timothy M. Tymkovich

U.S. Court of Appeals for the Tenth Circuit (2003 – present)

Prior Judicial Experience

None

Prior Legal Experience

Hale Hackstaff Tymkovich, LLP; Colorado Solicitor General; Davis Graham & Stubbs; Bradley Campbell Carney & Madsen; Law Clerk to Justice William H. Erickson (Colo. Supreme Court)

Education

JD, University of Colorado School of Law (1982); BA, Colorado College (1979)

Intellectual Property Cases Decided as a Judge

Patent	1 total (in favor of owner)
Trademark	5 total (4 in favor of owner; 1 in favor of infringer)
Copyright	6 total (1 in favor of owner; 5 in favor of infringer)
Trade Secret	2 total (1 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006); Celebrity Attractions, Inc. v. Okla. City Pub. Prop. Auth., 2016 U.S. App. LEXIS 15244 (10th Cir. Aug. 19, 2016); Cellport Sys., Inc. v. Peiker Acustic GMBH & Co. KG, 762 F.3d 1016 (10th Cir. 2014); Enter. Mgmt. Ltd., Inc. v. Warrick, 717 F.3d 1112 (10th Cir. 2013); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005); Sportsmans Warehouse, Inc. v. LeBlanc, 311 F. App’x 136 (10th Cir. 2009); Stan Lee Media, Inc. v. Walt Disney Co., 774 F.3d 1292 (10th Cir. 2014); Stan Lee Media, Inc. v. Walt Disney Co., 2015 U.S. App. LEXIS 16055 (10th Cir. May 26, 2015); Storagecraft Tech. Corp. v. Kirby, 744 F.3d 1183 (10th Cir. 2014); Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831 (10th Cir. 2005); Tomelleri v. MEDL Mobile, Inc., 657 F. App’x 793 (10th Cir. 2016); United States v. Shengyang Zhou, 717 F.3d 1139 (10th Cir. 2013); Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008); Vail Assocs., Inc. v. Vend-Tel-Co., 516 F.3d 853 (10th Cir. 2008)

20. Don R. Willett

Supreme Court of Texas (2005 – present)

Prior Judicial Experience

None

Prior Legal Experience

Deputy Texas Attorney General; Deputy Assistant Attorney General, Office of Legal Policy; Special Assistant to the President and Director of Law and Policy, President George W. Bush; Domestic Policy and Special Projects Adviser, Bush-Cheney 2000 Presidential Campaign; Director of Research and Special Projects, Governor George W. Bush; Haynes & Boone, LLP; Law Clerk to Judge Jerre S. Williams (5th Circuit)

Education

JD, Duke University School of Law (1992); BBA, Baylor University (1988)

Intellectual Property Cases Decided as a Judge

Patent	1 (dissenting in favor of state-court jurisdiction for patent negligence suits – a view ultimately adopted by the U.S. Supreme Court)
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Minton v. Gunn, 355 S.W.3d 634 (Tex. 2011)

21. Robert P. Young, Jr.

Michigan Supreme Court (1999 – present)

Prior Judicial Experience

Michigan Court of Appeals (1995 – 1999)

Prior Legal Experience

General Counsel, AAA Michigan; Dickinson, Wright, Moon, Van Dusen & Freeman

Education

JD, Harvard Law School (1977); BA, Harvard College (1974)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	1 total (in favor of owner)
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Citizens Ins. Co. v. Pro-Seal Serv. Grp., Inc., 477 Mich. 75 (2007)

[1] Professorial Lecturer in Law, George Washington University Law School. The author would like to thank Intellectual Ventures for its invaluable research support.

Tags Andrew Baluch, Antonin Scalia, copyright, Devlin Hartline, intellectual property, nomination, nominee, patent, President Trump, Supreme Court, trade secret, trademark

Economic Study Innovation

Creative Upstarts and Startups: How IP Creates Opportunities and Opens Doors

Post author By Joshua Grove
Post date January 11, 2017

This is the first in a series of posts summarizing CPIP’s 2016 Fall Conference, “Intellectual Property & Global Prosperity.“ The conference was held at Antonin Scalia Law School, George Mason University on October 6-7, 2016. Videos of the conference panels and keynote address, as well as other materials, are available on the conference website.

The opening panel of CPIP’s 2016 Fall Conference examined how intellectual property (IP) creates opportunities for startups and creative upstarts. Unfortunately, IP policy debates often refer to a misguided notion that intellectual property hinders innovation and creativity, especially among smaller businesses. The panelists, Prof. Deepak Hegde (NYU Stern School of Business), Brian Detwiler (Cobro Ventures, Inc.), Prof. Jerry Liu (University of San Francisco School of Law), and Antigone Peyton (Cloudigy Law, PLLC), illustrated how this notion ignores the fact that intellectual property provides incentives and security for startups and small businesses entering the market and enables returns on investments.

Prof. Deepak Hegde discussed a study he undertook to measure the extent that patents benefit startups. Patents provide incentives for innovation by affording the right to exclude others from making, selling, or otherwise using the patented invention. This incentive is ensured by increasing the cost of imitations, while facilitating licensing and access to venture capital by innovators. At the same time, there is a concern that patents are not as effective for smaller entrepreneurs because patents take too long to issue (three years on average), they are costly to obtain ($20,000 in patent application costs on average), and are expensive to enforce once infringed. The study, however, shows that timely patents do substantially benefit startups.

Hegde noted that measuring the causal effect of patent rights on startups is often an empirically challenging task due to the lack of complete data on issues like rejected patent applications, firm outcomes, and correlations between patenting and startup success. However, Hegde was able to show a positive causal relationship between approval of the first patent application and various measures of startup success such as persistent employment growth and higher sales.

For instance, Hegde found that approval of the first patent application by a medium-sized firm with eight employees leads to three more employees (on average) hired within the five years following approval. Likewise, a medium-sized firm with $4.3M in revenue has $2.3M higher sales over the five years following approval of its first patent. Moreover, approval of the first patent application leads to a 66.4% increase in the number of subsequent applications, a 48.4% growth in the number of approved patents, and a 68.5% increase in the number of total citations.

On the other hand, Hegde discovered that delays in the patent approval process reduce sales growth, with each year of delay reducing growth by 28.4% over the five years following approval. Delays also reduce the quality and quantity of subsequent innovations, with a 14% decrease in number of subsequent applications and a 8% reduction in number of total citations. Even more so, a five-year approval delay is comparable in effect to not granting a patent at all. Finally, Hegde showed that patent approvals causally increase the probability of venture capital funding by 57%, and thus, help to set startups on a growth path.

Brian Detwiler discussed the challenges startups face from a more practical point of view. Specifically, Detwiler focused on two startups that Cobro Ventures is currently managing. Measures of success differ among the two. For a health & fitness center, the issue is profitability, and for a tech startup, the concern is typically acquisition or an initial public offering. Because Cobro Ventures is a self-funded company, it does not encounter some of the funding challenges as other startups. It does, however, face the same intellectual property issues as others in the industry.

The critical issue for a startup in the fitness industry, Detwiler noted, is building a strong brand identity to distinguish itself from other companies in the crowded marketplace. CrossFit is one good example of how a strong brand makes a business successful: CrossFit generates its revenues solely from licensing its brand out to gyms and fitness centers, without operating any of its own.

Tech startups, continued Detwiler, are more invested in the value of their patents because patent due diligence is a major component of any tech acquisition. Bundles of patents and open continuations are what acquirers value the most. The former allows acquisition of all patents associated with a particular technology; the latter provides opportunities to expand claims to pending patents down the road. A patent by itself does not necessarily guarantee the merit of a particular technology, but it certainly shows that at least the Patent Office believes that the particular technology was unique in the marketplace at the time of issuance. Patents can also be used as weapons in protecting a company’s interests and as a bargaining chip in negotiations.

Detwiler stated that trademark registration is equally accessible to startups and big corporations because it is inexpensive (the filing fee is about $300 per class of goods/services), easy to file (only 10 minutes), and fast (around 3-4 months). With patents, the biggest challenge is getting a notice of allowance. There is a common misconception that all patent applications have the same value. This may be true for big corporations that file thousands of patent applications each year. But for startups, which usually have only two or three applications that they depend on, each such application is incredibly important, and if rejected, causes a lot of frustration.

Even though startups have more executive involvement in the patent approval process and are more willing to accept reasonably narrow claims at the outset, Detwiler said the patent examination process is still too lengthy. To get the best of it, he suggested that applicants explain in plain terms what they want to protect, examiners explain in plain terms what they found in their prior art searches, and both sides explore how to capture the claimed invention.

Prof. Jerry Liu talked about the study he undertook on market incentives and intrinsic motivations in the creative industries, particularly in the Chinese music industry. He focused his study on how online piracy affects the music industry and how real-world artists respond to copyright incentives. According to Liu, the Chinese music industry is significantly underdeveloped as compared to the United States. While the overall Chinese economy is fast approaching the size of the U.S. economy, the Chinese music industry represents only 1.5 % of the U.S. music industry.

Liu found that this outcome has little to do with the overall economic environment in China. Even though the music industry experienced a substantial decline since 2005, the economy as a whole enjoyed about 10% of annual growth. Nor is this a consequence of the infamous censorship system in China. Unlike the music industry, the book industry in China has demonstrated growth by 129% for the last decade. The likely reason for this difference is that the piracy rate in the music market is much higher than it is in the book market.

Empirical data collected by Liu establishes the correlation between online piracy and the Chinese music industry downturn. Online piracy surged in 2005, the very same year when music production started to decline significantly. As a result of such widespread piracy, music products have become undervalued among consumers. Only 25.4% of Chinese consumers are willing to pay for music, and only 5.9% actually pay for music. Online piracy has also caused a significant imbalance in the development of the digital music market. Notably, the Chinese government itself recently recognized that uncontrolled piracy has devastated the digital music marketplace.

In China, Liu said that online music services, including downloads and streaming, account only for 1% of the total digital market, while mobile sales (e.g., ringtones) hold 99% market share. But only 32.6% of music consumers are accessing music on their mobile devices, while 96.8% of users access music online. This shows that Chinese consumers pay the least for the most popular channel of music consumption. Additionally, online piracy affects business models in the music industry. For instance, record labels have moved away from their traditional role as investors. They are now working with new artists either on a self-funded basis (labels only provide services and artists bear all the risks of investment) or under so-called “360-degree deals” (labels sign artists for long-term contracts and retain more control over their careers and even their personal lives).

Finally, Liu highlighted the paradox of intrinsic motivations: 92% of the surveyed artists named emotional benefits as their incentive to create, and 97% of those artists also recognized the importance of economic benefits for creation. Importantly, many artists started their career in music not because of the money, but many of them also gave it up because of the money. In this way, copyright protection may provide a powerful incentive for artists to create in that it preserves their artistic freedom while ensuring a decent level of living and a fair return of production costs.

Antigone Peyton talked about strategies for tech companies to protect their assets. In this regard, she noted the importance of contracts at the early stages of the product development cycle. From the copyright prospective, contracts help to establish whether hired developers are employees or independent contractors and to ensure that their rights are assigned to the company. Without a written, explicit assignment of a copyright, a company may get in trouble down the road. For instance, when registering its work with the Copyright Office, enforcing its rights, or selling its assets to a third party.

Peyton stressed that companies working with the government need to understand what intellectual property rights they are giving away and to avoid assigning away all of their rights. Government contracts often include IP provisions that provide the government with a fully-paid license and allow it to bring in another contractor to continue the job. Another important aspect involves privacy policies, especially in the cyber security area. Companies that innovate in this sector usually bring people and know-how to the table, but not necessarily anything that is patentable. To protect its know-how, such a company should consider signing non-compete agreements with the people working with the company.

The barriers to entry for starting up a company in the software industry are small, said Peyton. But that means there are a lot of such companies out there trying to compete with each other for market space. To this end, companies need to think carefully about brand development and brand recognition, as well as how to protect their markets from competitors.

Peyton noted that if a company believes it has patentable subject matter, it should consider filing a patent application early on. However, patenting is the most expensive IP regime and usually requires the help of a patent professional (even with provisional applications). Patents are particularly critical in the biotech, chemical, and pharma industries that are money-intensive endeavors, which largely depend on attracting venture capital investment as early as possible. Generally, tech companies do not need to choose between copyrights and patents, and they may pursue both options to protect their software. But investing in copyrights and brand development is a relatively inexpensive way to start out and build an IP portfolio. Depending on the technology used, trade secret protection may also be an option for tech startups.

Together, the four panelists highlighted how intellectual property has a critical value for startups and small companies in the creative and innovative industries. Not only does IP ignite their businesses, but it also brings opportunities for future growth through sales, licensing, or acquisition. A strong IP portfolio is an invaluable asset, and building it early allows companies to open more doors.

Tags 2016 Fall Conference, Antigone Peyton, Brian Detwiler, copyright, creative upstarts, Deepak Hegde, innovation, intellectual property, IP, Jerry Liu, Maryna Koberidze, patent, startups, trade secret, trademark

Rejection of DOJ Consent Decree Interpretation is a Win for Songwriters

Post author By Joshua Grove
Post date September 30, 2016

Cross-posted from the Mister Copyright blog.

Earlier this month, a federal judge in the Southern District of New York issued an order rejecting the Department of Justice’s (DOJ) interpretation of a consent decree governing the way the performance rights organization Broadcast Music Inc. (BMI) licenses its songs. The ruling was in response to a DOJ statement that the consent decrees controlling BMI and ASCAP should be interpreted to include a “full-work” licensing agreement that would require any entity that controls part of a composition to offer a license for the whole composition. The implications of the DOJ’s evaluation would be disastrous for both artists and the organizations that represent them, and while the judge’s order is likely not the final say in the debate, it represents a strong endorsement of the rights of publishers and songwriters to control their creative works.

PROs and the Consent Decrees

Performance rights organizations (PROs) act as intermediaries between songwriters and parties who wish to perform their copyrighted works publicly. Pooling compositional copyrights and offering “blanket licenses” to users such as bars, stores, gyms, radio and television stations, and Internet music distributors, PROs facilitate access to millions of songs while eliminating the need for individualized negotiations and licensing agreements. PROs also collect royalties from their licensees and distribute them among their member songwriters, composers, and music publishers, providing a workable solution to an otherwise impossibly complex system of individual agreements.

ASCAP and BMI are governed by consent decree agreements that have been in place for over 75 years and were introduced by the Department of Justice to promote competition in the marketplace for musical works. Under the decrees, PROs are encouraged to compete with one another to recruit songwriters and must offer licenses to venues and users on equivalent terms. It’s a system intended to benefit both emerging, unknown songwriters and established artists in order to prevent any one PRO from leveraging undue market influence.

Full v. Fractional Licensing

But even with the support of PROs, complicated licensing issues arise when a musical composition has more than one author or rights owner. In 2014, the Antitrust Division of the DOJ initiated an inquiry into the effectiveness of the consent decrees, soliciting comments from various stakeholders on whether the decrees obligate ASCAP and BMI to offer licenses to an entire work when not all owners of the composition are members of the organization. “Full-work” licenses allow for a song to be licensed provided that one owner consents by way of membership in a PRO, regardless of how much of the composition that party owns or whether the co-owners have conflicting contractual agreements.

Default copyright law treats joint authors of a single work as tenants-in-common, with any co-owner retaining the right to grant a nonexclusive license to the entire work without the consent of other owners, so long as the licensor compensates the other co-owners. As this rule is strictly the default, co-owners are free to agree to alternate arrangements with regard to licensing the underlying work, including one in which an author may only offer a license to the partial interest it holds in the work. This type of agreement, known as “fractional” licensing, requires that a licensee obtain additional licenses from all other rights owners or the PROs representing them.

The comments received by the DOJ as part of its consent decree investigation showed conflicting views on the treatment of multi-owner works. Rightsholders claimed that PROs had never offered full licenses and urged the DOJ to add language to the decree that would confirm this understood feature of the agreement. Music users and licensees, by contrast, argued that full licensing was always part of the deal and also pressed the DOJ to amend the decree to reflect their opinion. These differing opinions were never addressed in past revisions of the decrees because most licensees would obtain blanket licenses from both BMI and ASCAP, which would then charge fees based on their respective market shares, accounting for songs to which they represented only a partial interest.

DOJ Gets it Wrong

With new licensees entering the market in the form of streaming internet services, the DOJ decided it was time to clarify this neglected, but important, part of the decrees. In a statement issued last month, the Department concluded that it would not be in the interest of the public to modify the decrees to permit fractional licensing, insisting that full-licensing was the intent of the decrees and would not upset the rights of co-authors. But despite positioning its statement as an interpretation of the existing decrees, the DOJ statement actually modified a decades-old industry standard while trampling on the rights of creators and rights owners.

Instead of explaining how full-licensing doesn’t violate copyright law, the statement focuses on the “immediate access” to works that would be threatened by fractional licensing. The DOJ repeatedly warns of the consequences of having to secure licenses from multiple owners or authors, claiming it will result in licensees “simply turning off the music.” But the statement seems to confuse the original intent of the decrees with the creation of a system that guarantees immediate access to any song a licensee might want to play. While licensing efficiency is important, respect for the rights of all those responsible for creating a work shouldn’t be discarded for a haphazard licensing mechanism.

The statement goes on to argue that fractional licensing would force licensees and music users to carefully track song ownership and rights information to avoid potential infringement, a process that would be nearly impossible due to the lack of a reliable source of ownership data. But as Register Pallante explains in her response to a request for the Copyright Office’s insight on the licensing of jointly-owned works, full-licensing would impose a much more extreme burden on PROs that would have to ascertain, song-by-song for millions of songs, whether they have the right to grant a full license. These logistical challenges would surely result in higher operational costs that would have to be recouped through higher commissions to PRO members.

In addition to logistical problems, Register Pallante warns of the legal complications that would inevitably result from a full-licensing scheme: “Such an approach would seemingly vitiate important principles of copyright law, interfere with creative collaborations among songwriters, negate private contracts, and impermissibly expand the reach of the consent decrees.”

Songwriters and PROs Strike Back

Not surprisingly, the songwriting community was outraged by the DOJ’s disregard for artists’ rights and criticized the statement for its betrayal of long-accepted and practical licensing mechanisms. Just weeks after the statement was issued, the Songwriters of North America (SONA) – an advocacy group founded by and made up of artists and composers – sued the DOJ, claiming the agency overstepped its authority and that its ruling violated the property rights of songwriters by potentially invalidating private contracts between co-authors and collaborators.

PROs also joined forces to fight the Justice Department’s interpretation of the consent decrees, with ASCAP pursuing legislative reform while BMI took legal action to challenge full-licensing in federal court. In a pre-motion letter to Judge Louis Stanton, BMI warns of the disastrous consequences of the DOJ’s interpretation and urges the court to determine that its consent decree allows for the long-standing industry practice of fractional licensing.

On September 16th, Judge Stanton issued an opinion and declaratory judgment unequivocally rejecting the Justice Department’s interpretation of BMI’s consent decree. The opinion makes clear that “nothing in the consent decree gives support to the Division’s views,” and that because infringements and remedies are not addressed, the decree “neither bars fractional licensing nor requires full-work licensing.”

The decision was celebrated by songwriters and PROs as a sensible and informed response to the DOJ’s misguided understanding of the decrees. But while Judge Stanton’s order is now the controlling interpretation of the BMI decree, the Justice Department may appeal the decision, and it’s likely that music licensees will push back with their own lawsuits and legislative efforts. Regardless of future developments, the unprecedented unified effort of PROs, mobilization of artist organizations such as SONA, and clear message by an informed federal court bode well for the protection of creators’ rights and the preservation of sound copyright law.

Tags competition, copyright, copyright infringement, intellectual property, U.S. Copyright Office

European Union Draws a Line on Infringing Hyperlinks

Post author By Joshua Grove
Post date September 13, 2016

Cross-posted from the Mister Copyright blog.

Last week, the European Court of Justice—the judicial authority of the European Union—issued an anticipated decision in the Sanoma hyperlinking case, declaring that commercial linking with knowledge of unauthorized content constitutes copyright infringement. The opinion comes after years of similar cases in Europe stirred debate over whether linking to pirated works was a ‘communication to the public’ and therefore infringing, and provides a sensible test that protects the works of authors and creators while ensuring the internet remains a bastion of free speech.

Sanoma involved the popular Dutch news and gossip site GeenStijl, which ran an article in 2011 that included links to an Australian website where copyrighted Playboy magazine photos were made available. The photos were published on the Australian website without the consent of Sanoma, Playboy’s editor and copyright owner of the photos at issues, but taken down after the site was notified of their infringing nature. Despite similar notifications, GeenStijl refused to remove the hyperlinks and actually provided links to another website hosting the unauthorized photos after the Australian website took them down.

Sanoma brought a copyright infringement claim against GS Media, which operates the GeenStijl website, and the Supreme Court of the Netherlands sought a preliminary ruling from the European Court of Justice on whether hyperlinks represent the communication of a work to the public. According to an earlier EU directive, any communication to the public of works protected by copyright must be authorized by the copyright owner. Due to the ubiquity of links and hyperlinks on the Internet, a ruling classifying them as communications to the public would have major ramifications for anyone linking to unauthorized content.

In its judgment, the European Court of Justice found that the concept of ‘communication to the public’ requires individual assessment and laid out the following three factors that must be considered when determining whether a link or hyperlink qualifies.

1) The deliberate nature of the intervention – According to the Court, “the user makes an act of communication when it intervenes, in full knowledge of the consequences of its actions, in order to give access to a protected work to its customers.”
2) The concept of the ‘public’ covers an indeterminate number of potential viewers and implies a large number of people.
3) The profit-making nature of a communication to the public – The Court explains that when hyperlinks are posted for profit, “it may be expected that the person who posted such a link should carry out the checks necessary to ensure that the work concerned is not illegally published.”

Applying these criteria to Sanoma, the Court found that because GS Media runs a commercial website that makes money from advertising, it is undisputed that they posted the hyperlinks for profit, and that it is also undisputed that Sanoma had not authorized the publication of the photos. It also found that because they were notified by Sanoma and continued to repost links after the original source website took down the content, GS Media was aware of the infringing nature of the photos and “cannot, therefore, rebut the presumption that it posted those links in full knowledge of the illegal nature of that publication.” The Court concluded that by posting the links, GS Media therefor effected a ‘communication to the public.’

The Court goes on to detail its desire to maintain a fair balance between the interest of copyright owners and authors and the protection of the interests and fundamental rights of Internet users, “in particular their freedom of expression and of information, as well as the general interest.” After providing the criteria for assessing whether a link qualifies as a communication to the public, the opinion emphasizes the important role hyperlinks play in the exchange and free flow of information over the internet, and clarifies that linking—even to unauthorized content—is not a communication to the public if there is no profit motive or knowledge of the infringing nature of the linked-to works. Even so, it’s important to note that not-for-profit hyperlinking may still be considered a communication to the public if the person posting the link knew or should have reasonably known that the content was posted without authorization.

Perhaps most surprising about the Court’s decree is the relative approval by both copyright owners and supporters of the rights of those posting links. While it speaks to the reasonable approach the Court has taken in determining what qualifies as a communication to the public, it may also represent a hesitation to condemn or praise the order due to a significant ambiguity. It’s not entirely clear who carries the evidentiary burden of proving whether an individual knew or should have reasonably known certain content was posted on the Internet without authorization. If copyright owners and authors are forced to prove a user knew or should have known content was unauthorized every time they attempt to remove links that can appear online incessantly, it could render the new directives ineffectual in protecting creative works.

Regardless of the uncertainly surrounding this burden of proof, the current test seems to strike a balance that holds commercial websites more accountable, while allowing for some flexibility for the general public. With debates over the effectiveness of notice and takedown intensifying in the United States, the EU’s decision on communications to the public should be recognized as workable approach to dealing with infringing hyperlinks. As the United States Copyright Office admits in its 2016 study on the making available right, jurisprudence in the US regarding offering access to content hosted elsewhere on the Internet through hyperlinking is less developed as some foreign jurisdictions. But the study acknowledges the progress made in the EU, and emphasizes the need to include ‘offers of access’ in the crucial making available right.

Despite semantic differences, the EU and the US are both moving towards systems that will impose greater accountability for posting links to unauthorized works. The EU’s directive makes clear that commercial hyperlinking to unauthorized content is indeed a communication to the public and therefor copyright infringement, while ensuring that the free flow of information through general public linking will not be threatened and the Internet will remain unbroken. It’s an approach that represents the greater goals of copyright law around the world, and other jurisdictions should follow the lead of the EU when crafting copyright policies that address the intricacies of the Internet.

Tags copyright, copyright infringement, DMCA, intellectual property, notice and takedown, notice-and-staydown

Copyright Copyright Licensing Copyright Theory Infringement Intellectual Property Theory Internet Reasonable Royalty Uncategorized

Despite What You Hear, Notice and Takedown is Failing Creators and Copyright Owners

Post author By Joshua Grove
Post date August 24, 2016

In a recent op-ed in the LA Times, Professors Chris Sprigman and Mark Lemley praise the notice and takedown provisions of the Digital Millennium Copyright Act (DMCA) as “a bit of copyright law worth saving.” They argue that Section 512 of the DMCA continues to serve its purpose of balancing the rights of copyright owners and creators with those of Internet service providers (ISPs), while leaving both sides only “slightly disappointed.” Satisfying these two groups is indeed a difficult charge, but it’s simply disingenuous to suggest that creators and copyright owners are satisfied with a system so clearly in need of an overhaul.

As the Copyright Office embarks on its review of the DMCA, supporters and critics of the nearly twenty-year-old doctrine are weighing in on its effectiveness in addressing online infringement. Sprigman and Lemley claim that the “process has worked well for years,” and that the result of shifting more enforcement burden to ISPs “could be a broken Internet.” But for those creators and copyright owners who have their works resurface online just minutes after they are taken down, the Internet is already “broken.” The fact that piracy continues to intensify, despite incredible efforts to have infringing content taken down, shows that notice and takedown is largely ineffective.

As CPIP Senior Scholar Sean O’Connor testified before Congress, the notice and takedown system is not working for any of its intended beneficiaries. The constant game of whack-a-mole renders the system essentially futile for copyright owners and creators, and it creates significant burdens for ISPs that want to comply—especially small to mid-level companies that can’t afford compliance staff. Worse still, by shielding service providers from liability, the DMCA creates perverse incentives where there’s little downside to ignoring infringing content. In fact, reviewing content could lead to an ISP having knowledge of infringement and losing its safe harbor.

Now that the Copyright Office’s review is underway, it’s somewhat strange to see some supporters claim that all is well. But has anything actually changed since the Office announced its study? Of course not. The whack-a-mole problem remains, and the knowledge standards are still interpreted broadly to disproportionately favor ISPs. When one side says the system is working and the other side says it’s broken, the truth is that the system is not working well for everyone. Sprigman and Lemley can claim that the DMCA is “worth saving” only by downplaying the true plight of creators and copyright owners.

A concrete example of this struggle comes from the comments filed by Universal Music Group (UMG) as part of the Copyright Office’s study. UMG describes the painstaking efforts devoted to protect just one artist’s creative work. In October of 2014, UMG and Big Machine Records launched a joint offensive to protect Taylor Swift’s “1989.” A staff of UMG employees dedicated 100% of their time and resources to manually search for infringements on YouTube, SoundCloud, and Tumblr, and through March of 2016, they had sent over 66,000 DMCA takedown notices. Despite their considerable efforts, over 500,000 links to the album were identified, and “1989” was illegally downloaded nearly 1.4 million times from torrent sites.

Of course, this type of effort would be impossible to replicate for any works other than those that attract such massive attention. For most artists, the burden of monitoring the Internet and sending takedown notices would fall entirely on their shoulders, with no guarantee of putting a stop to the theft of their works. Sprigman and Lemley ignore these problems, instead claiming that since copyright owners sent “more than 500 million takedown requests just to Google last year,” we know that the “system is a powerful tool against pirated content.” That would be great, if true, but the reality is that those notices barely made a dent.

Sprigman and Lemley claim that the “genius of the DMCA” is that it “enables entertainment companies to turn piracy into legitimate revenue.” They give the example of “YouTube’s Content ID system,” which “gives copyright owners the opportunity to ‘claim’ their work and share in any advertising revenue rather than pull it off the site.” From the perspective of creators and copyright owners, the only “genius” of this system is that YouTube can legally present them with an unfair choice—suffer infringement and get nothing or monetize and get next to nothing.

While Sprigman and Lemley praise the “more than $1 billion” paid out by YouTube, the real question is how much more copyright owners and creators would have been paid in a properly functioning market. YouTube is consistently teeming with infringing videos—one recent report revealed that over 180 million infringing videos had been removed in 2014 alone. And the artists that YouTube’s largess supposedly benefits are loudly complaining about their exploitation. If Content ID is so great, why are so many creators and copyright owners upset with the arrangement? The monetization Google offers to copyright owners and artists is less than half of the royalties paid out by streaming services like Pandora, an amount that artists have denounced as already inequitable.

In her excellent piece on the fictions of the Content ID system, Grammy-winning artist Maria Schneider exposes Content ID as a way for Google to cash in by actually legitimizing and perpetuating piracy. She explains that a majority of creators that opt for monetization realize miserable percentages of ad revenue, and the continued illegal uploading of their music and content drives billions of users to YouTube’s platform. YouTube has turned the weakness of the DMCA into a system that exploits artists while offering embarrassingly lower royalty rates than what would be negotiated in a free market.

The current situation is untenable, and if change means “breaking” the Internet, then we should pull out the pickaxes and get to work. A system of notice and staydown, rather than just takedown, would help alleviate the constant and seemingly ineffectual vigilance required by the current system. By removing all copies of a protected work and blocking inevitable re-postings, ISPs would honor the original purpose of the DMCA while actually doing their part to earn the protection of the safe harbor provisions. Only by ensuring that targeted works do not resurface will ISPs respect the rights of those without whose content they would cease to exist.

How anyone can honestly say that the current notice and takedown system is working for copyright owners and creators is mystifying given the constant calls for reform from creators and the numerous critical comments filed with the Copyright Office. The incredible magnitude of takedown notices sent and the seemingly unstoppable reappearance of infringing works online are a clear signal that the system is completely failing those it was meant to protect. Creators and copyright owners deserve a better chance at protecting the fruits of their labors, and the DMCA needs to be changed so that it truly is a system “worth saving.”

Tags copyright, copyright infringement, DMCA, Google, intellectual property, notice and takedown, notice-and-staydown, Sean O'Connor, Section 512, U.S. Copyright Office

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